PTAB Ruling Breaks Ranks With Supreme Court and Federal Circuit

Authored by Brian S. Mudge and Tiffany Mahmood

In a recent trial institution decision, the Patent Trial and Appeal Board held that a business method patent for trading securities was patent eligible under 35 U.S.C. § 101. The case, Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2015-00061 (PTAB July 16, 2015) (paper 9) involved a covered business method (CBM) patent proceeding related to U.S. Patent No. 7,024,387. Chicago Mercantile Exchange (CME), the petitioner, asserted various grounds of unpatentability against patent owner, 5th Market, including patent ineligibility under Section 101. In a holding that appears to be at odds with recent Supreme Court and Federal Circuit precedent, the PTAB ruled that the challenged claims of the ʼ387 were patent eligible because the disclosed structure for a means plus function element was, in effect, a “special purpose computer” that provides a meaningful limitation on the claimed abstract idea.

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Amendment Hurdles: Clearing Hurdles for Substitute Independent Claim Does Not Necessarily Lead to Clearing Hurdles for Substitute Dependent Claim

Authored by Michelle Carniaux, Michael E. Sander, and Eric Paul Greenwald

In an earlier post, we discussed the Patent Trial and Appeal Board’s (“the Board”) Idle Free decision, which explained the high hurdle for a successful patentability argument in a Motion to Amend Claims. See IPR2012-00027, No. 26, Order (P.T.A.B. June 11, 2013).

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Pharmaceutical Claims Found Unpatentable

Authored by Michael K. Levy

On June 20, 2014, the Patent Trial and Appeal Board (PTAB) issued the first inter partes review (IPR) decisions reaching pharmaceutically-related subject matter, which in this case constituted dietary supplement and vitamin products. Four separate final written decisions, addressing four respective patents claiming related subject matter, held claims unpatentable directed to pharmaceutical compositions and methods of treatment using such compositions.

The twenty claims among the four patents ultimately reviewed by the PTAB were generally directed to treating particular indications by administering compositions containing a natural isomer of a reduced folate (e.g., 5-methyl-(6S)-THF), as an alternative to folic acid, which some individuals reportedly do not absorb easily. Petitioner essentially relied upon one prior art reference disclosing preparations for the use of folate or an undefined suitable active metabolite, and another disclosing the natural folate metabolite 5-methyl-(6S)-THF for treating folate deficiency. Despite Patent Owners’ reliance on nearly a dozen experts and other declarants’ testimony rebutting the combination, the PTAB found all challenged claims either anticipated or rendered obvious by the prior art. Notably, the PTAB carefully assessed the proffered objective evidence of nonobviousness (“secondary considerations”), finding in all cases that Patent Owners had failed to establish a nexus linking the evidence of commercial success, unexpected results, long-felt need, licensing and copying to any novel element in the claims. During the IPR proceedings, Patent Owners canceled a number of claims among the four patents, leaving only 30 for the PTAB to consider.

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Invalidating a Patent Under 35 U.S.C. § 112 in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

When Congress enacted the America Invents Act authorizing the new inter partes review (“IPR”) proceedings, they made clear that an IPR petitioner could challenge a patent only under 35 U.S.C. § 102 and § 103, and only on the basis of patents and printed publications.  See 35 U.S.C. § 311(b).  Congress did not authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112.  However, this does not mean that the Board is prohibited from invalidating patent claims under § 112 in an IPR.  Specifically, the statute mandating that the Board issue a final written decision does not appear to place limits on the Board’s ability to consider invalidity under other grounds.  Rather, the statute states that:

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